IPR2014-00917
`U.S. Patent No. 6,805,779
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`TAIWAN SEMICONDUCTOR MANUFACTURING COMPANY,
`LTD., TSMC NORTH AMERICA CORPORATION, FUJITSU
`SEMICONDUCTOR LIMITED, FUJITSU SEMICONDUCTOR
`AMERICA, INC., ADVANCED MICRO DEVICES, INC., RENESAS
`ELECTRONICS CORPORATION, RENESAS ELECTRONICS
`AMERICA, INC., GLOBAL FOUNDRIES U.S., INC.,
`GLOBALFOUNDRIES DRESDEN MODULE ONE LLC & CO. KG,
`GLOBALFOUNDRIES DRESDEN MODULE TWO LLC & CO. KG,
`TOSHIBA AMERICA ELECTRONIC COMPONENTS, INC., TOSHIBA
`AMERICA INC., TOSHIBA AMERICA INFORMATION SYSTEMS,
`INC., TOSHIBA CORPORATION, and THE GILLETTE COMPANY,
`
`Petitioners
`
`v.
`
`ZOND, LLC
`Patent Owner
`__________________
`
`Case IPR2014-009171
`Patent 6,805,779
`__________________
`
`
`
`
`
`ZOND LLC’S PATENT OWNER RESPONSE
`
`
`
`1 Cases IPR2014-00918, IPR2014-01074, and IPR2014-01025 have been joined
`
`with the instant proceeding.
`
`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION .......................................................................................................................1
`
`II. TECHNOLOGY BACKGROUND ...........................................................................................7
`
`A.
`
`B.
`
`Overview Of Plasma Generation ...................................................................................7
`
`The ’779 patent: Dr. Chistyakov invents a new plasma generator containing a
`feed gas source, an excited atom source with a magnet that traps electrons, a
`plasma chamber that confines excited atoms, and an energy source that ionizes
`the confined excited atoms in a multi-step ionization process. .....................................9
`
`C.
`
`The Petitioner Mischaracterized The File History. ......................................................13
`
`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW .......................................15
`
`IV. CLAIM CONSTRUCTION. ..................................................................................................15
`
`A.
`
`The construction of “metastable atoms,” “multi step ionization,” and “excited
`atoms.” .........................................................................................................................16
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED CLAIM OF
`THE ’779 PATENT. ...............................................................................................................17
`
`A.
`
`The Petition failed to demonstrate that a skilled artisan would have been
`motivated to combine the teachings of the prior art references to achieve the
`claimed invention of the ’779 patent with a reasonable expectation of success
`or that combining the teachings of the prior art would have led to predictable
`results. ..........................................................................................................................18
`
`1.
`
`Scope and content of prior art. ...............................................................................20
`
`a.
`
`b.
`
`c.
`
`d.
`
`2.
`
`3.
`
`Iwamura ...........................................................................................................21
`
`Pinsley and Angelbeck .....................................................................................22
`
`Gruber ..............................................................................................................23
`
`Wells ................................................................................................................24
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine The Laser Of Angelbeck Or Pinsley With The Plasma Treatment
`Apparatus Of Iwamura With A Reasonable Expectation Of Success. ..................24
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine Gruber’s Gas Laser With The Plasma Treatment Apparatus Of
`Iwamura With A Reasonable Expectation Of Success. .........................................27
`
`
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`ii
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`4.
`
`The Petitioner Failed To Show That It Would Have Been Obvious To
`Combine Wells’ Gas Photon Laser With The Plasma Treatment Apparatus
`Of Iwamura, or Pinsley’s Laser With A Reasonable Expectation Of
`Success ...................................................................................................................30
`
`B.
`
`The Petition failed to demonstrate how the alleged combinations teach every
`element of the challenged claims. ................................................................................33
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`The combination of Iwamura and Angelbeck Does Not Teach “an excited
`atom source that receives ground state atoms from the feed gas source …
`the excited atom source generating excited atoms from the ground state
`atoms,” As Recited In Claim 1 And As Similarly Recited In Independent
`Claim 18. ................................................................................................................33
`
`The combination of Iwamura, Angelbeck and Pinsley does not teach “the
`excited atom source comprising a magnet that generates a magnetic field
`for substantially trapping electrons proximate to the ground state atoms”
`as recited in independent claim 1 and as similarly recited in independent
`claim 18. .................................................................................................................37
`
`The combination of Iwamura, Angelbeck and Pinsley does not teach “a
`plasma chamber that is coupled to the excited atom source,” as recited in
`independent claim 1 and as similarly recited in independent claim 18. ................42
`
`The combination of Iwamura, Angelbeck and Pinsley does not teach “the
`plasma chamber confining a volume of excited atoms generated by the
`excited atom source” as recited in independent claim 1 and as similarly
`recited in independent claim 18. ............................................................................45
`
`The combination of Iwamura, Angelbeck and Pinsley does not teach “an
`energy source that is coupled to the volume of excited atoms confined by
`the plasma chamber” as recited in independent claim 1 and as similarly
`recited in independent claim 18. ............................................................................46
`
`The combination of Iwamura, Angelbeck, and Pinsley does not teach “the
`energy source raising an energy of excited atoms in the volume of excited
`atoms so that at least a portion of the excited atoms in the volume of
`excited atoms is ionized,” as recited in independent claim 1 and as
`similarly recited in independent claim 18. .............................................................47
`
`The Combination Of Iwamura, Angelbeck, Pinsley And Wells Does
`Not Teach That “the excited atom source comprises an electron gun
`that directs an electron beam into the ground state atoms, the electron
`beam exciting the ground state atoms,” As Recited In Dependent
`Claim 7, And As Similarly Recited In Dependent Claim 20. ..........................49
`
`8.
`
`The Combination Of Iwamura, Angelbeck, Pinsley And Gruber Does
`Not Teach That “the excited atom source comprises an inductively
`
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`iii
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
`coupled discharge
source that generates a discharge that excites
`ground state
atoms,” As Recited In Dependent Claim 9, And As
`Similarly Recited In Dependent Claim 21. ........................................................52
`
`The Combination Of Iwamura, Angelbeck, Pinsley And Gruber Does
`Not Teach “an inductively coupled discharge source that is coupled to
`the feed gas source, the inductively coupled discharge source
`generating excited atoms from the ground state atoms,” As Recited In
`Independent Claim 44. ........................................................................................53
`
`The combination of Iwamura, Angelbeck, Pinsley, and Gruber does
`not teach “a plasma chamber that is coupled to the inductively coupled
`discharge source, the plasma chamber confining a volume of excited
`atoms generated by the excited atom source” as recited in independent
`claim 44. ................................................................................................................54
`
`The combination of Iwamura, Angelbeck, Pinsley, and Gruber does
`not teach “an energy source that is coupled to the volume of excited
`atoms confined by the plasma chamber” as recited in independent
`claim 44. ................................................................................................................56
`
`The combination of Iwamura, Angelbeck, Pinsley, and Gruber does
`not teach “the energy source raising an energy of excited atoms in the
`volume of excited atoms so that at least a portion of the excited atoms
`in the volume of excited atoms is ionized,” as recited in independent
`claim 44. ................................................................................................................57
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`The combination of Iwamura, Angelbeck, and Pinsley Does Not
`Teach “trapping electrons and ions in the volume of metastable
`atoms,” as recited in dependent claim 38. ..........................................................58
`
`VI. CONCLUSION.......................................................................................................................60
`
`
`
`
`
`iv
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
`
`Exhibit List
`
`Description
`
`Exhibit
`No.
`Ex. 2004 Transcript of deposition of Dr. Kortshagen, Petitioners’ expert, for
`the ’779 Patent, 1/16/2015.
`
`Ex. 2005 Declaration of Dr. Hartsough, Patent Owner’s expert.
`
`
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`v
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`I. INTRODUCTION
`
`The Petitioners’ arguments hinge on fanciful misreadings of the prior art
`
`by their proffered expert, Dr. Kortshagen. As will be shown below, neither
`
`Iwamura, Angelbeck nor Pinsley teaches a “metastable atom source
`
`comprising a magnet that generates a magnetic field for substantially trapping
`
`electrons proximate to the ground state atoms,” as recited in claim 18. Once
`
`the Board recognizes that Dr. Kortshagen essentially invented some of the
`
`alleged “teachings” in Iwamura, Angelbeck, or Pinsley to suit the Petitioners’
`
`objectives, the Board should agree to confirm the challenged claims.
`
`The ’779 patent discloses and illustrates in FIG. 6 (reproduced on the
`
`next page below) a metastable atom source 500 including a chamber 502, first
`
`504a, b and second magnets 506a, b that create magnetic fields 508a, b through
`
`the chamber 502. A power supply 510 is coupled to the metastable atom
`
`source 500. A gas line 528 is coupled to an input 530 of the chamber 502. An
`
`output 532 of the chamber 502 is coupled to an input 534 of an electron/ion
`
`absorber 536. In operation, ground state atoms 208 from the gas source (not
`
`shown) flow to the metastable atom source 500 through the input 530 of the
`
`chamber 502. The ground state atoms 208 flow between the first electrode 524
`
`and the second electrode 526. The first 524 and the second electrodes 526 are
`
`energized by the power supply 510, such that an electric field is created that
`
`
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`1
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`generates a discharge in a discharge region 544 between the first 524 and the
`
`second electrodes 526. The ground state atoms 208 that are injected through
`
`the discharge region 540 are energized to a metastable state.
`
`
`
`
`
`In one embodiment, ions in the chamber 502 impact the more negatively
`
`biased electrode (either the first 524 or the second electrode 526) and generate
`
`secondary electrons (not shown) from that electrode. The magnetic fields 508a,
`
`508b confine many of the electrons 426 and the secondary electrons in the
`
`
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`2
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`chamber 502 thereby improving the efficiency of the excitation process in the
`
`chamber 502.
`
` Iwamura, in contrast, does not mention a magnet nor metastable
`
`atoms. Indeed, the Petitioner’s own expert, Dr. Kortshagen, admitted in his
`
`deposition that he could not find any mention of either a magnet or metastable
`
`atoms in Iwamura:
`
`Q. In your opinion, is there any explicit reference to metastable
`
`atoms in the Iwamura patent?
`
`A. Explicit in the term that it -- it says metastable atom, I don't
`
`think there is; that is correct.2
`
`…
`
`A. No, Iwamura actually does not disclose a magnet, and this is
`
`why in the declaration referring to claim 18, which maybe you
`
`could hand me a little later, we're invoking obviousness over
`
`Iwamura and Angelbeck and Pinsley.3
`
`But Angelbeck and Pinsley cannot possibly compensate for the deficiencies of
`
`Iwamura because as explained by the Patent Owner’s expert Dr. Hartsough,
`
`“Angelbeck’s system produces a plasma, not excited/metastable atoms as
`
`
`2 Exhibit 2004, Kortshagen Deposition (1.16.15), p. 105, ll. 4-9.
`
`3 Id. at p. 161, ll. 6-11.
`
`
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`3
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`claimed. Specifically, Angelbeck teaches, ‘[t]he current-excited discharge
`
`passed through the gas within tube 10 creates a plasma in which the atoms are
`
`ionized and electrons are freed.’”4 Moreover, as further explained by Dr.
`
`Hartsough, the magnetic fields disclosed in Angelbeck and Pinsley would
`
`create a transverse magnetic field increasing the loss of electrons to the tube
`
`walls, instead of trapping electrons proximate to the ground state atoms as
`
`claimed in the ‘779 patent.5
`
`Thus, Dr. Kortshagen’s conclusory opinions are unsupported and should
`
`be disregarded by the Board. Once the prior art is properly understood, the
`
`Board will see that it is missing key claim limitations, not only a “metastable
`
`atom source comprising a magnet that generates a magnetic field for
`
`substantially trapping electrons proximate to the ground state atoms,” but also
`
`many other limitations in the other claims of the ’779 patent as explained in
`
`detail below.6
`
`
`4 Exhibit 2005, Dr. Hartsough’s Declaration, ¶ 58, quoting Angelbeck, col.
`
`2:55-57.
`
`5 Id. at ¶ 60.
`
`6 Infra, § V.B.
`
`
`
`4
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`In addition to missing key limitations, the Petitioner’s obviousness
`
`rejections are all predicated on the false assumption that a skilled artisan could
`
`have achieved the combination of (i) a feed gas source comprising ground
`
`state atoms; (ii) an excited atom source that generates excited atoms from the
`
`ground state atoms and has a magnet that traps electrons near the ground state
`
`atoms; (iii) a plasma chamber that confines excited atoms; and (iv) an energy
`
`source that ionizes the confined excited atoms in a multi-step ionization
`
`process, as required by independent claims 1 and 18 of the ’779 patent by
`
`combining the teachings of Iwamura, Angelbeck, and Pinsley.7
`
`But these three references disclose very different structures and
`
`processes. As explained by Dr. Hartsough, the claimed invention of the ’779
`
`patent confines the excited atoms after they are transformed from ground state
`
`atoms so that they can later be ionized while the excited atoms in Angelbeck’s
`
`laser or Pinsley’s laser must return to their ground state to release energy so
`
`that the laser will operate according to its intended purpose: to emit light.8
`
`And the Petitioner sets forth no evidence that the structure and process
`
`of Iwamura would produce the particular plasma generator containing (i) a
`
`
`7 Petition at pp. 18-40.
`
`8 Exhibit 2005, Dr. Hartsough’s Declaration, ¶ 48.
`
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`5
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`feed gas source comprising ground state atoms; (ii) an excited atom source that
`
`generates excited atoms from the ground state atoms and has a magnet that
`
`traps electrons near the ground state atoms; (iii) a plasma chamber that
`
`confines excited atoms; and (iv) an energy source that ionizes the confined
`
`excited atoms in a multi-step ionization process, as required by independent
`
`claims 1 and 18 of the ’779 patent if Iwamura were somehow modified by a
`
`structure that uses a laser to generate light like Angelbeck or Pinsley.9 Indeed,
`
`a laser emits light with the release of energy when electrons in atoms move to a
`
`lower energy state. Because higher energy atoms in Angelbeck and Pinsley’s
`
`laser are used to make light, they would not be available for the plasma
`
`generation process of Iwamura.
`
`That is, the Petitioner did not show that a “skilled artisan would have
`
`been motivated to combine the teachings of the prior art references to achieve
`
`the claimed invention, and that the skilled artisan would have had a reasonable
`
`expectation of success in doing so.”10 The Board has consistently declined to
`
`
`9 See e.g., Petition, pp. 18-40.
`
`10 OSRAM Sylvania, Inc. v. Am Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
`
`Cir. 2012).
`
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`6
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`institute proposed grounds of rejections in IPR proceedings when the Petition
`
`fails to identify any objective evidence such as experimental data, tending to
`
`establish that two different structures or processes can be combined.11 Here,
`
`the Petitioner did not set forth any such objective evidence.12
`
`For these reasons as expressed more fully below, none of the challenged
`
`claims of the ‘779 patent are obvious.
`
`II. TECHNOLOGY BACKGROUND
`
`A. Overview Of Plasma Generation
`
`“A plasma is a collection of charged particles that move in random
`
`directions.”13 “For example, a plasma can be generated by applying a
`
`potential of several kilovolts between two parallel conducting electrodes in an
`
`inert gas atmosphere (e.g., argon) at a pressure that is between about 10-1 and
`
`10-2 Torr.”14 Plasma is generated for use in sputtering systems, which deposit
`
`films on substrates:
`
`
`11 Epistar, et al. v. Trustees Of Boston University, IPR2013-00298, Decision Not To
`
`Institute, Paper No. 18 (P.T.A.B. November 15, 2103).
`
`12 See e.g., Petition, pp. 14-60.
`
`13Exhibit 1401, ‘779 patent col. 1, ll. 7-9.
`
`14 Id. at col. 1, ll. 14-16.
`
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`7
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`Ions, such as argon ions, are generated and are then drawn out of
`
`the plasma and accelerated across a cathode dark space. The target
`
`surface has a lower potential than the region in which the plasma
`
`is formed. Therefore, the target surface attracts positive ions.
`
`Positive ions move towards the target with a high velocity and
`
`then impact the target and cause atoms to physically dislodge or
`
`sputter from the target surface. The sputtered atoms then
`
`propagate to a substrate or other work piece where they deposit a
`
`film of sputtered target material.15
`
`Magnets can be used in sputtering systems to increase the deposition rate:
`
`Magnetron sputtering systems use magnetic fields that are shaped
`
`to trap and concentrate secondary electrons proximate to the target
`
`surface. The magnetic fields increase the density of electrons and,
`
`therefore, increase the plasma density in a region that is proximate
`
`to the target surface. The increased plasma density increases the
`
`sputter deposition rate.16
`
`These magnetron sputtering systems, however, have “undesirable non-
`
`uniform erosion of target material.”17 To address these problems, researchers
`
`
`15 Id. col. 1, ll. 30-42.
`
`16 Id. at col. 1, ll. 50-57.
`
`17 Id. at col. 4, ll. 64-65.
`
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`8
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`increased the applied power and later pulsed the applied power.18 But
`
`increasing the power increased “the probability of establishing an electrical
`
`breakdown condition leading to an undesirable electrical discharge (an
`
`electrical arc) in the chamber.”19 And “very large power pulses can still result
`
`in undesirable electrical discharges and undesirable target heating regardless of
`
`their duration.”20
`
`B. The ’779 patent: Dr. Chistyakov invents a new plasma generator
`containing a feed gas source, an excited atom source with a magnet that
`traps electrons, a plasma chamber that confines excited atoms, and an
`energy source that ionizes the confined excited atoms in a multi-step
`ionization process.
`
`To overcome the problems of the prior art, Dr. Chistyakov invented a
`
`plasma generator containing (i) a feed gas source comprising ground state
`
`atoms; (ii) an excited atom source that generates excited atoms from the
`
`ground state atoms and has a magnet that traps electrons near the ground state
`
`atoms; (iii) a plasma chamber that confines excited atoms; and (iv) an energy
`
`source that ionizes the confined excited atoms in a multi-step ionization
`
`
`18 Id. at col. 4, ll. 3-20.
`
`19 Id. at col. 4, ll. 7-9.
`
`20 Id. at col. 4, ll. 18-20.
`
`
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`9
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`

`
`process as recited in independent claims 1, 18, 30 and 44 and as illustrated in
`
`Fig. 2 of the ’779 patent, reproduced below:
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`
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`
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`As illustrated by FIG. 2, Dr. Chistyakov’s plasma generation apparatus
`
`includes “an excited atom source that generates excited atoms from ground
`
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`10
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`state atoms from a feed gas source 206.”21 In one embodiment, “the excited
`
`atom source is a metastable atom source 204.”22 “The feed gas source 206
`
`provides a volume of ground state atoms 208 to the metastable atom source
`
`204.”23 “The plasma generator of the present invention can use any type of
`
`metastable atom source 204. Skilled artisans will appreciate that there are
`
`many methods of exciting ground state atoms 208 to a metastable state.”24
`
`Dr. Chistyakov’s plasma generation apparatus then moves the excited or
`
`metastable atoms toward a chamber:
`
`The plasma chamber 230 confines the volume of metastable atoms
`
`218. In one embodiment, the output of the metastable atom source
`
`204 is positioned so as to direct the volume of metastable atoms
`
`218 towards the cathode assembly 114. In one embodiment, the
`
`geometry of the plasma chamber 230 and the cathode assembly
`
`114 is chosen so that the metastable atoms reach the cathode
`
`
`21 Id. at col. 4, ll. 30-31.
`
`22 Id. at col. 4, ll. 31-34.
`
`23 Id. at col. 4, ll. 34-36.
`
`24 Id. at col. 5, ll. 1-5.
`
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`11
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`assembly 114 at a time that is much less than an average transition
`
`time of the metastable atoms to ground state atoms.25
`
`The plasma generator also includes a magnet to increase the plasma density
`
`near the cathode:
`
`In one embodiment, a magnet (not shown) is disposed proximate
`
`to the cathode assembly 114. The magnet generates a magnetic
`
`field that traps electrons in the plasma proximate to the cathode
`
`assembly 114 and, therefore, increases the plasma density. In the
`
`region proximate to the cathode assembly 114.26
`
`“The plasma generator 200 of FIG. 2 uses a multi-step or stepwise
`
`ionization process to generate the plasma 202.”27 A “multi-step ionization
`
`process according to the present invention includes a first step where atoms are
`
`excited from a ground state to an excited state and a second step where atoms
`
`in the excited state are ionized.”28
`
`Dr. Chistyakov’s “multi-step ionization process … substantially
`
`increases the rate at which the plasma 202 is formed and therefore, generates a
`
`
`25 Id. at col. 6, ll. 48-56.
`
`26 Id. at col. 6, ll. 34-39.
`
`27 Id. at col. 6, ll. 60-61.
`
`28 Id. at col. 7, ll. 4-7.
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`12
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`relatively dense plasma.”29 “Once a plasma having the desired characteristics
`
`is generated, the plasma 202 can be used in the processing of the workpiece
`
`138. … In a plasma sputtering application, ions in the plasma can be used to
`
`sputter material from the target 116. The sputtered material is deposited on the
`
`workpiece 138 to form a thin film.”30
`
`Thus, Dr. Chistyakov accomplished his breakthrough of improved
`
`plasma generation by inventing a particular apparatus comprising (i) a feed gas
`
`source comprising ground state atoms; (ii) an excited atom source that
`
`generates excited atoms from the ground state atoms and has a magnet that
`
`traps electrons near the ground state atoms; (iii) a plasma chamber that
`
`confines excited atoms; and (iv) an energy source that ionizes the confined
`
`excited atoms in a multi-step ionization process. In the claimed invention of
`
`the ‘779 patent, ground state atoms are transformed to excited atoms and the
`
`excited atoms are moved to a plasma chamber where they are confined and
`
`ionized by an energy source.
`
`C. The Petitioner Mischaracterized The File History.
`
`The Petitioner alleged that the claims of the ’779 patent were allowed
`
`solely because the Applicant (i.e., now the Patent Owner) “amended the
`
`
`29 Id. at col. 8, ll. 65-67.
`
`30 Id. at col. 9, ll. 42-50.
`
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`13
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`independent claims at issue here to require that the distinct source further
`
`includes ‘a magnet that generates a magnetic field for substantially trapping
`
`electrons proximate to the ground state atoms.’”31
`
`But this allegation is not true because the Applicant amended the
`
`independent claims to specify that “an excited atom source receives ground
`
`state atoms from the feed gas source.”32 More importantly, the Applicant
`
`amended the claims at the suggestion of the Examiner to include the
`
`limitations from a dependent claim, as applicants frequently do.33 That is, the
`
`independent claims were allowed because of all the components recited within
`
`them (i.e., the feed gas source, excited atom source, plasma chamber, energy
`
`source) as well as the recitation of the transformation of ground state atoms to
`
`excited atoms and the movement of the excited atoms among the various
`
`components, and not because of one of the claim amendments made prior to
`
`allowance of the patent.
`
`
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`
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`31 Petition, p. 10 (citing Ex. 1409, 05/06/04 Resp. at 2, 4, 6, 8 and 10).
`
`32 Exhibit 1409, 05/06/04 Resp. at 2.
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`33 Id. at 11.
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`14
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`III. SUMMARY OF THE INSTITUTED GROUNDS FOR REVIEW
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`For the Board’s convenience below is a summary of the proposed
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`grounds of rejection that are pending in this IPR proceeding:
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`1. Claims 9, 21 and 44: obvious in view of Iwamura, Angelbeck and
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`Gruber;
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`2. Claims 7 and 20: obvious in view of Iwamura, Angelbeck, and
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`Wells; and
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`3. Claim 38: obvious in view of Iwamura, Angelbeck, and Pinsley.
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`IV. CLAIM CONSTRUCTION.
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`Under the Board’s rules, any unexpired claim “shall be given its broadest
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`reasonable construction in light of the specification of the patent in which it
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`appears.”34 Under that construction, claim terms are to be given their ordinary
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`and customary meaning as would be understood by one of ordinary skill in the
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`art in the context of the entire patent disclosure.35 The customary meaning
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`applies unless the specification reveals a special definition given to the claim
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`
`34 37 C.F.R. § 42.100(b).
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`35 Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc);
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`Research in Motion v. Wi-Lan, Case IPR2013-00126, Paper 10 at 7 (P.T.A.B.
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`June 20, 2013).
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`15
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`IPR2014-00917
`U.S. Patent No. 6,805,779
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`term by the patentee, in which case the inventor’s lexicography governs.36 Any
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`term not construed below should be given its ordinary and customary meaning
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`as would be understood by one of ordinary skill in the art.
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`A. The construction of “metastable atoms,” “multi step ionization,” and
`“excited atoms.”
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`The Board construed “metastable atoms” as “excited atoms having energy
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`levels from which dipole radiation is theoretically forbidden.”37 The Board
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`also construed the claim term “multi-step ionization” as “an ionization process
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`having at least two distinct steps.”38 The Board construed the claim term
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`“excited atoms” as “atoms that have one or more electrons in a state that is
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`higher than its lowest possible state.”39
`
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`36 See Phillips, 415 F.3d at 1316 (“[T]he specification may reveal a special
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`definition given to a claim term by the patentee that differs from the meaning
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`that it would otherwise possess. In such cases, the inventor’s lexicography
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`governs.”).
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`37 IPR2014-00828, Institution Decision, Paper No. 9, p. 8.
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`38 Id. at 10.
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`39 IPR2014-00829, Institution Decision, Paper No. 9, p. 7.
`
`
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`16
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`

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`IPR2014-00917
`U.S. Patent No. 6,805,779
`
`V. THE PETITIONERS CANNOT PREVAIL ON ANY CHALLENGED
`CLAIM OF THE ’779 PATENT.
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`Differences between the challenged claims and the prior art are critical
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`factual inquiries for any obviousness analysis and must be explicitly set forth
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`by the Petitioner.40 The bases for rejection under 35 U.S.C. § 103 must be
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`made explicit.41 Thus, a Petition seeking to invalidate a patent as obvious must
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`demonstrate that a “skilled artisan would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention, and that
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`the skilled artisan would have had a reasonable expectation of success in doing
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`so.”42 The Petition’s evidence must also address every limitation of every
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`challenged claim.
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`Here, the Board should confirm the challenged claims because (i) the
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`Petition failed to demonstrate that a skilled artisan would have been motivated
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`to combine the teachings of the prior art references to achieve the claimed
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`invention of the ’779 patent, and that the skilled artisan would have had a
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`reasonable expectation of success in doing so or that combining the teachings
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`
`40 See Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966).
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`41 MPEP § 2143.
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`42 OSRAM Sylvania, Inc. v. Am. Induction Techs., Inc., 701 F.3d 698, 706 (Fed.
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`Cir. 2012).
`
`
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`17
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`IPR2014-00917
`U.S. Patent No. 6,805,779
`
`of the prior art would have led to predictable results, (ii) the Petition failed to
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`demonstrate that the prior art teaches every element of the challenged claims.
`
`A. The Petition failed to demonstrate that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention of the ’779 patent with a reasonable
`expectation of success